Case Details
- Citation: [2023] SGIPOS 8
- Court: Intellectual Property Office of Singapore
- Date: 2023-04-27
- Judges: Principal Assistant Registrar Sandy Widjaja
- Plaintiff/Applicant: Nidec Control Techniques Limited
- Defendant/Respondent: Uni-Drive Systems (S) Pte Ltd
- Legal Areas: Trade marks and trade names – Revocation for non-use
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2010] SGIPOS 14, [2015] SGIPOS 6, [2017] SGIPOS 15, [2019] SGIPOS 18, [2019] SGIPOS 6, [2021] SGIPOS 11, [2022] SGIPOS 9, [2023] SGIPOS 8
- Judgment Length: 65 pages, 14,009 words
Summary
This case involves a revocation action brought by Nidec Control Techniques Limited ("the Applicant") against two registered trade marks owned by Uni-Drive Systems (S) Pte Ltd ("the Proprietor"). The Applicant sought to revoke the Proprietor's trade marks on the grounds of non-use under Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act. The Intellectual Property Office of Singapore ("IPOS") had to determine whether the Proprietor had used the trade marks in accordance with the statutory requirements during the relevant time periods.
What Were the Facts of This Case?
The Applicant is a leading manufacturer of AC and DC variable speed drives and servo drives, as well as power conversion technologies. It supplies these goods for use in industrial applications such as elevators, crane systems and pump compressors. The Proprietor was established in 1987 and has grown into a leading distributor and exporter of mechanical power transmission and related hardware products, with an international clientele spanning Asia, the Middle East, Europe, Australia, and the United States.
The Applicant filed declarations for revocation against two of the Proprietor's registered trade marks: a word mark (T9712703Z) and a device mark (T9712704H), both registered in Class 7 for various power transmission goods. The Applicant filed these revocation actions in response to the Proprietor's marks being cited by the Registry of Trade Marks during the examination process for the Applicant's own trade mark application.
The Proprietor filed counter-statements and evidence of use in response to the revocation actions. The two cases were subsequently consolidated, and the matter was heard by the Principal Assistant Registrar of IPOS.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Proprietor had used the registered trade marks in accordance with the requirements of Section 22(1)(a) and 22(1)(b) of the Trade Marks Act during the relevant time periods.
- If the Proprietor had not used the marks as required, whether partial revocation under Section 22(6) would be appropriate.
How Did the Court Analyse the Issues?
The Registrar examined the evidence provided by both parties and considered the following four key issues under Section 22(1)(b):
- The "when" issue: Whether the marks had been used during the relevant time periods defined by the statute.
- The "what" issue: Whether there had been use of the marks, either in the forms in which they were registered or in forms that did not alter their distinctive character.
- The "which" issue: Whether the marks had been used in relation to the goods for which they were registered.
- The "where" issue: Whether the marks had been used in Singapore.
The Registrar also considered the types of use under Section 27(4) of the Act and the possibility of partial revocation under Section 22(6).
In assessing the evidence, the Registrar examined the various forms of use demonstrated by the Proprietor, including use of the marks on invoices, packaging, catalogues, and websites. The Registrar carefully evaluated whether this use met the statutory requirements in terms of the time periods, the forms of the marks, the goods covered, and the location of use.
What Was the Outcome?
The Registrar ultimately found that the Proprietor had demonstrated sufficient use of the registered trade marks during the relevant time periods and in relation to the registered goods. The Registrar therefore dismissed the Applicant's revocation actions, and the Proprietor's trade marks remained valid and enforceable.
Why Does This Case Matter?
This case provides valuable guidance on the legal principles and evidentiary requirements for demonstrating use of a registered trade mark in order to defend against a revocation action. The Registrar's detailed analysis of the "when", "what", "which", and "where" issues under Section 22(1)(b) offers a comprehensive framework for trade mark owners to assess their own use of registered marks and prepare evidence to withstand non-use challenges.
The case also highlights the importance of maintaining proper records and documentation of trade mark use, as this evidence is crucial in defending against revocation actions. Trade mark owners should ensure they have a robust system in place to track and record their use of registered marks, both in Singapore and globally, to be prepared for potential challenges to their registrations.
Additionally, this decision reinforces the principle that partial revocation under Section 22(6) is a discretionary remedy, and the Registrar will consider the overall circumstances and evidence in determining whether it is appropriate. Trade mark owners facing partial revocation actions should be prepared to present a comprehensive case demonstrating genuine use of their marks.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2010] SGIPOS 14
- [2015] SGIPOS 6
- [2017] SGIPOS 15
- [2019] SGIPOS 18
- [2019] SGIPOS 6
- [2021] SGIPOS 11
- [2022] SGIPOS 9
- [2023] SGIPOS 8
Source Documents
This article analyses [2023] SGIPOS 8 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.